Vol. 77
`No. 157
`
`Tuesday,
`August 14, 2012
`
`Part III
`
`Department of Commerce
`
`Patent and Trademark Office
`37 CFR Part 42
`Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents; Final Rule
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`48680
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`Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Part 42
`[Docket No. PTO–P–2011–0083]
`
`RIN 0651–AC71
`
`Changes to Implement Inter Partes
`Review Proceedings, Post-Grant
`Review Proceedings, and Transitional
`Program for Covered Business Method
`Patents
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Final rule.
`
`SUMMARY: The United States Patent and
`Trademark Office (Office or USPTO) is
`revising the rules of practice to
`implement the provisions of the Leahy-
`Smith America Invents Act (‘‘AIA’’) that
`create the new inter partes review
`proceeding, post-grant review
`proceeding, and transitional post-grant
`review proceeding for covered business
`method patents, to be conducted before
`the Patent Trial and Appeal Board
`(Board). These provisions of the AIA
`will take effect on September 16, 2012,
`one year after the date of enactment.
`DATES: Effective Date: September 16,
`2012.
`Applicability Dates: The changes for
`inter partes review proceedings apply to
`any patent issued before, on, or after
`September 16, 2012 (subpart B).
`The changes for post-grant review
`proceedings generally apply to patents
`issuing from applications subject to
`first-inventor-to-file provisions of the
`AIA (subpart C). In addition, the Chief
`Administrative Patent Judge may, in the
`interests-of-justice, order an
`interferences commenced before
`September 16, 2012, to be dismissed
`without prejudice to the filing of a
`petition for post-grant review. See
`42.200(d) and § 6(f)((3)(A) of the AIA.
`The changes for transitional program
`for covered business method patents
`apply to any covered business method
`patent issued before, on, or after
`September 16, 2012 (subpart D).
`FOR FURTHER INFORMATION CONTACT:
`Michael P. Tierney, Lead
`Administrative Patent Judge, Sally G.
`Lane, Administrative Patent Judge, Sally
`C. Medley, Administrative Patent Judge,
`Robert A. Clarke, Administrative Patent
`Judge, and Joni Y. Chang,
`Administrative Patent Judge, Board of
`Patent Appeals and Interferences, by
`telephone at (571) 272–9797.
`SUPPLEMENTARY INFORMATION: Executive
`Summary: Purpose: On September 16,
`2011, the AIA was enacted into law
`
`(Pub. L. 112–29, 125 Stat. 284 (2011)).
`The purpose of the AIA and this final
`rule is to establish a more efficient and
`streamlined patent system that will
`improve patent quality and limit
`unnecessary and counterproductive
`litigation costs. The preamble of this
`notice sets forth in detail the procedures
`by which the Board will conduct inter
`partes review proceedings, post-grant
`review proceedings, and transitional
`post-grant review proceedings for
`covered business method patents. The
`USPTO is engaged in a transparent
`process to create a timely, cost-effective
`alternative to litigation. Moreover, the
`rules are designed to ensure the
`integrity of the trial procedures. See 35
`U.S.C. 316(b), as amended, and 35
`U.S.C. 326(b). This final rule would
`provide a set of rules relating to Board
`trial practice for inter partes review
`proceedings, post-grant review
`proceedings, and transitional post-grant
`review proceedings for covered business
`method patents.
`Summary of Major Provisions:
`Consistent with section 6 of the AIA,
`this final rule sets forth for inter partes
`review: (1) The requirements for a
`petition to institute an inter partes
`review of a patent; (2) the standards for
`showing of sufficient grounds to
`institute an inter partes review; (3) the
`standards for instituting an inter partes
`review; (4) the procedures for
`conducting an inter partes review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing; (5) the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and (6) the time periods for
`completing the review (subpart B of 37
`CFR part 42).
`Consistent with section 6 of the AIA,
`this final rule sets forth for post-grant
`review: (1) The requirements for a
`petition to institute a post-grant review
`of a patent; (2) the standards for
`showing of sufficient grounds to
`institute a post-grant review; (3) the
`standards for instituting a post-grant
`review; (4) the procedures for
`conducting a post-grant review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing; (5) the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and (6) the time periods for
`completing the review (subpart C of 37
`CFR part 42).
`Consistent with sections 6 and 18 of
`the AIA, this final rule further sets forth
`for transitional post-grant review of
`covered business method patents: (1)
`The requirements for a petition to
`institute a post-grant review of a
`
`covered business method patent; (2) the
`standards for showing of sufficient
`grounds to institute a post-grant review
`of a covered business method patent; (3)
`the standards for instituting a post-grant
`review of a covered business method
`patent; (4) the procedures for
`conducting a post-grant review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing; (5) the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and (6) the time periods for
`completing the review (subpart D of 37
`CFR part 42).
`Costs and Benefits: This rulemaking is
`not economically significant, but is
`significant, under Executive Order
`12866 (Sept. 30, 1993), as amended by
`Executive Order 13258 (Feb. 26, 2002)
`and Executive Order 13422 (Jan. 18,
`2007).
`Background: To implement sections 6
`and 18 of the AIA, the Office published
`the following notices of proposed
`rulemaking: (1) Rules of Practice for
`Trials before the Patent Trial and
`Appeal Board and Judicial Review of
`Patent Trial and Appeal Board
`Decisions, 77 FR 6879 (Feb. 9, 2012), to
`provide a consolidated set of rules
`relating to Board trial practice for inter
`partes review, post-grant review,
`derivation proceedings, the transitional
`program for covered business method
`patents, and judicial review of Board
`decisions by adding new parts 42 and
`90 including a new subpart A to title 37
`of the Code of Federal Regulations (RIN
`0651–AC70); (2) Changes to Implement
`Inter Partes Review Proceedings, 77 FR
`7041 (Feb. 10, 2012), to provide rules
`specific to inter partes review by adding
`a new subpart B to 37 CFR part 42 (RIN
`0651–AC71); (3) Changes to Implement
`Post-Grant Review Proceedings, 77 FR
`7060 (Feb. 10, 2012), to provide rules
`specific to post-grant review by adding
`a new subpart C to 37 CFR part 42 (RIN
`0651–AC72); (4) Changes to Implement
`Transitional Program for Covered
`Business Method Patents, 77 FR 7080
`(Feb. 10, 2012), to provide rules specific
`to the transitional program for covered
`business method patents by adding a
`new subpart D to 37 CFR part 42 (RIN
`0651–AC73); (5) Transitional Program
`for Covered Business Method Patents—
`Definition of Technological Invention,
`77 FR 7095 (Feb. 10, 2012), to add a new
`rule that sets forth the definition of
`technological invention for determining
`whether a patent is for a technological
`invention solely for purposes of the
`transitional program for covered
`business method patents (RIN 0651–
`AC75); and (6) Changes to Implement
`Derivation Proceedings, 77 FR 7028
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